Insul-Wool Insulation Corp. v. Home Insulation
| Decision Date | 25 July 1949 |
| Docket Number | No. 3830,3831.,3830 |
| Citation | 176 F.2d 502 |
| Parties | INSUL-WOOL INSULATION CORPORATION v. HOME INSULATION, Inc. INSUL-WOOL INSULATION CORPORATION v. FEDERAL INSULATION CO., Inc., et al. |
| Court | U.S. Court of Appeals — Tenth Circuit |
Claude A. Fishburn, Kansas City, Mo., and Emmet A. Blaes, Wichita, Kan. (M. R. Baker, Oklahoma City, Okl., on the brief), for appellant.
C. Earl Hovey, Kansas City, Mo., (Robert K. Everest and John R. Miller, Oklahoma City, Okl., on the brief), for appellees.
Before BRATTON, HUXMAN and MURRAH, Circuit Judges.
Insul-Wool Insulation Corporation, as assignee of patentee, William J. Kroop, brought these actions against Home Insulation, Inc., and Federal Insulation Company seeking an injunction and damages for an alleged infringement of its Letters Patent No. 2,166,926, for "packing and insulating material". Upon a trial of the consolidated cases the trial court sustained the pleaded defense of invalidity on the grounds of prior knowledge and use of the patented product more than two years prior to the patentee's application for letters patent on March 1, 1935.
The court's findings and judgment are based in part upon depositions taken by other defendants in a former suit brought by this appellant involving the same issues of infringement. The depositions were admitted in evidence in these cases over the objections of the appellant on the grounds of hearsay. A preliminary question is whether the depositions were admissible to prove the crucial question of prior knowledge and use.
Some courts have taken the view that the fundamental and essential right of confrontation and cross-examination is impaired by the admission of testimony adduced in a former suit not between the same parties or their privies and not involving identical issues. See Wigmore on Evidence, Second Edition, Vol. 3, Sections 1360-1366; Rutherford v. Geddes, 4 Wall. 220, 71 U.S. 220, 18 L.Ed. 343; Tappan v. Bearsley, 10 Wall. 427, 77 U.S. 427, 19 L. Ed. 974; All v. All, D.C., 250 F. 120; Young v. Travelers Ins. Co., 10 Cir., 68 F.2d 83; Franzen v. E. I. Du Pont De Nemours & Co., 3 Cir., 146 F.2d 837; United States v. Aluminum Co. of America, D.C., 1 F.R.D. 48; Eller v. Mutual Ben. Health & Accident Ass'n, D.C., 1 F.R.D. 280; United States v. Silliman, D.C., 6 F.R.D. 262. See cases collected in Annotation, 142 A.L.R. 674, 675, 676. Another school of thought, led by Professor Wigmore, advances what he calls the "living principle of evidence" which, while recognizing the right of cross-examination as fundamentally essential to the development of truth in testimony, nevertheless contends that identity of interest is the controlling test of admissibility and that identity of parties does not serve the principle. Thus, it is said that "it ought, then, to be sufficient to inquire whether the former testimony was given upon such an issue that the party-opponent in that case had the same interest and motive in his cross-examination that the present opponent has; and the determination of this ought to be left entirely to the trial judge." Wigmore on Evidence, Second Edition, Vol. 3, Sec. 1388; Mid-City Bank & Trust Co. v. Reading, D.C., 3 F.R.D. 320; Bartlett v. Kansas City Pub. Service Co., 349 Mo. 13, 160 S. W.2d 740, 142 A.L.R. 666; George v. Davie, 201 Ark. 470, 145 S.W.2d 729; Kreuger v. Sylvester, 100 Iowa 647, 69 N.W. 1059; North River Ins. Co. v. Walker, 161 Ky. 368, 170 S.W. 983; Security Realty & Development Co. v. Bunch, Tex.Civ. App., 143 S.W.2d 687; Young v. Reed, La. App., 192 So. 780. See cases collected Annotation 142 A.L.R. 673, 676.
The admissibility of such evidence is in accord with Rule 26(d) Federal Rules of Civil Procedure, 28 U.S.C.A., providing that at a trial any part or all of the deposition, as far as admissible under the rules of evidence, may be used against any party who was present or represented at the taking of the depositions or who had due notice thereof. In our case the objecting party was a party to the former suit involving identical issues and was accorded full opportunity for cross-examination. Accepting this principle as the test of admissibility the trial court admitted the evidence, and we think rightly so.
The question whether the patent in suit arises to the dignity of invention is not in issue, and we have only the question whether that which the appellant has embodied in his patent was known and used more than two years prior to his application for patent on March 1, 1935. See R.S. Sec. 4886 as amended by the Act of March 3, 1897, c. 391, Sec. 1, 29 Stat. 692, as amended by the Act of May 23, 1930, c. 312, Sec. 1, 46 Stat. 376 and prior to the amendment of August 5, 1939, c. 450, Sec. 1, 53 Stat. 212, 35 U.S.C.A. § 31.
On March 1, 1935, William J. Kroop, the patentee, applied for a patent upon an "improvement in process of manufacturing packing and insulating material". In 1937 a second application was filed and in 1939 a third, each stating that it was a continuation of the preceding applications.
The specification of the first application shows the object of the proposed invention was to utilize waste paper, or like fibrous substance, by chopping or grinding the same to a minute, fluffy texture of a size sufficient to pass through a one-eighth inch mesh woven screen. The comminution was to be by hammer mill and to be treated, if desired, for fireproofing. The packing and insulation obtained from the fibrous, sheet-like substance was described as light, easily applied, fireproof, and very efficient for the purposes to which it might be adapted.
The specifications of the third application, after describing the paraphernalia used in the process of making the insulation, relates the movement and treatment of the paper or fibrous material and the comminution of the material by hammer mills so that the finally comminuted substance will pass through a screen of the critical size of one-eighth inch mesh, thereby producing a mass of heterogeneously arranged and interlocked slim, fuzzy, fluffy, fiberlike particles of varying length less than one-eighth of an inch and of generally uniform though irregular transverse cross-section area, some of said particles crossing each other along their length with the fuzz of one particle engaging the fuzz of the other, the fiberlike particles being definitely non-flaky and generally elongated.
The patent in suit was issued in 1939, pursuant to the third application, but since it was a continuation of the first and the claims thereof within or a division of the claims set forth in the first, the trial court held that "the two year public use or sale which may void a patent" under the then applicable statute, must be computed from March 1, 1935, the date of the first application for the letters patent citing Smith v. Goodyear Dental Vulcanite Co., 93 U.S....
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